patent pending in 24 hours 4th (2007)

4th edition Patent Pending in 24 Hours by Attorneys Richard Stim & David Pressman FOURTH EDITION JANUARY 2007 Editor RI CHARD STIM Illustrations S ASHA STIMVOGEL Book Design SUSA N PUTNEY Proofreading R OBERT WELLS Index BA YSIDE INDEXING SERVICE Cover photography TO NYA PERME www.tonyaperme.com Printing DEL TA PRINTING SOLUTIONS Stim, Richard. Patent pending in 24 hours / by Richard Stim & David Pressman. 4th ed. p. cm. Includes index. ISBN 1-4133-0511-3 (alk. paper) 1. Patent practice United States Popular works. I. Pressman, David, 1937 - II. Title. KF3120.Z9S75 2006 346.7304'86 dc22 2006046638 Copyright © 2002, 2003, 2004, and 2006 by Nolo. ALL RIGHTS RESERVED. Printed in the U.S.A. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise without the prior written permission of the publisher and the authors. Repr oduction prohibitions do not apply to the forms contained in this product when reproduced for personal use. For information on bulk purchases or corporate premium sales, please contact the Special Sales Department. For academic sales or textbook adoptions, ask for Academic Sales. Call 800-955-4775 or write to Nolo, 950 Parker Street, Berkeley, CA 94710. Dedication anks to David Pressman for his great coauthorship and thanks to the two people who really made this book sparkle: Lisa Guerin, whose editing truly rocks; and Susan Putney, whose layout and art skills helped make this into a real multimedia experience! is book is dedicated to Andrea Ross. R.S. I thank Rich Stim and the other staff at Nolo and my clients for their good work and helpful suggestions in making this book a reality. D.P. Table of Contents 1 e Provisional Patent Application How a Provisional Patent Application Works 3 Advantages of Filing a Provisional Patent Application 6 Potential Disadvantages of Filing a Provisional Application 15 Preparing Your Provisional Patent Application 16 Drinking Beer and Listening to the Car Radio: Two Provisional Patent Applications 18 2 Deciding Whether to File a Provisional Application: e Seven Hurdles Hurdle #1: Is It Commercial? 28 Hurdle #2: Did You Invent It? 34 Hurdle #3: Do You Own It? 37 Hurdle #4: Is It Useful? 39 Hurdle #5: Does It Fit in One of the Patent Classes? 40 Hurdle #6: Is It New? 42 Hurdle #7: Is It Obvious? 43 Patent Hurdles 44 3 Finding Previous Inventions Internet Patent-Searching Tips 50 Searching the USPTO Website 56 How to Read a Patent 65 Finding Prior Art at Isn’t Currently Patented 71 After the Preliminary Search 75 4 Drafting the Provisional Patent Application: Part 1—Drawing Your Invention Basic Patent Drafting Principles 84 Getting Started 87 Tips for Inventors Who Have a Prototype but Can’t Draw 89 Tips for Inventors Who Don’t Have a Prototype and Can’t Draw 95 Drawings for Software, Business Methods, Electrical Inventions, and Chemical Compounds 97 5 Drafting the Provisional Patent Application: Part II—Describing Your Invention What Do You Call Your Invention? 105 What Are the Names and Addresses of the Inventors? 106 What Are the Advantages of Your Invention Over the Prior Art? 107 What Drawing Figures Have You Included? 108 What Are the Components of Your Invention and How Do ey Interact? 109 How Does the Invention Achieve Its Result? 113 What Are Alternative Ways at Your Invention Can Achieve Its Result? 114 Putting It All Together 115 6 Filing and Beyond How to File Your Provisional Patent Application 124 Filing a Regular Patent Application 137 Marking Your Invention “Patent Pending” 138 What Happens If You Modify Your Invention? 139 International Rules to Remember 143 Appendix A: Provisional Patent Applications Pasteurization 147 e Telephone 152 Car Radio 165 Fly Mask 172 Convertible Tent 176 Non-Fogging Shower Mirror 186 ree-Wheeled Scooter 201 Musical Condom 219 Fashion Business Method 227 Watch With Speed Adjustment During Travel for Reducing Jet Lag (Mitchell Electrical Patent) 248 Pre-Monopoly Board Game 265 Advertising System for Airport 274 Mashed Potato Machine 287 Method of Viewing Panoramic Images 298 Puppet Construction Kit 315 Ergonomic Mouse 333 Talking Stick Horse 345 Appendix B: Agreements Nondisclosure Agreement 362 Joint Ownership Agreement for Inventors 368 Agreement for Creation of Prototype or Patent Drawings 374 Invention Assignment 377 Appendix C: Glossaries Glossary of Useful Technical Terms 380 Glossary of Patent Terms 394 Appendix D: e Inventor’s Notebook Appendix E: Attorneys Finding an Attorney 414 Keeping Fees Down 415 Appendix F: Resources Inventor Resources 418 Internet Patent-Searching Resources 419 Assessing Foreign Patent Potential 421 Patent and Trademark Depository Libraries 421 Index 1 C H A P T E R e Provisional Patent Application How a Provisional Patent Application Works 3 Advantages of Filing a Provisional Patent Application 6 Assess the Commercial Potential of Your Invention Before Filing for a Patent 6 Use a “Patent Pending” Notice to Warn Potential ieves 8 Provide an Alternative to Building and Testing Your Invention 8 Establish an Official United States Patent Application Filing Date for Your Invention 11 Preserve Your Application in Confidence 13 Extend the Expiration Date of Any Patent at Later Issues 14 Advantages for Foreign Applicants 15 Potential Disadvantages of Filing a Provisional Application 15 Inaccuracy Will Undo Your Protection 15 Modifications Require a New Provisional Application 15 You Must File Foreign Patent Applications Within a Year 16 Preparing Your Provisional Patent Application 16 Drinking Beer and Listening to the Car Radio: Two Provisional Patent Applications 18 Pasteur’s Improvement to Making Beer (Pasteurization) 18 Lear’s Car Radio 20 e Invention 23 Initial Problems 23 “You don’t get up in the morning and say I’m going to invent something. It doesn’t work like that. What might happen is you might trip over the carpet. And you think to yourself, ‘I’ll go and nail the carpet down.’ And as you walk into your workshop, you think, ‘I haven’t finished paying for the carpet yet so I can’t put nails through it. So, suppose I screw to the edge of the deck, a piece of plastic that would hold the carpet down. en it could look neat and stop me from tripping over the carpet.’ at’s how an invention comes about.” —Trevor Bayliss (inventor of the Freeplay radio), interview on Todd Mundt Radio Show, February 8, 2001 C ongratulations—you invented some- thing! So what’s next? If you’re like most inventors, your first concern is to make sure nobody can steal your great idea. ere used to be only one foolproof way to put the world on notice that you claimed ownership of an invention: filing a patent application. Getting a patent gives you the right to prevent others from making, using, or selling your invention for a limited period of time. But this protection comes at a price: You can expect to spend anywher e from $5,000 to $10,000 or more to file a patent application through an attorney . And because fewer than 3% of all patented inventions ever make any money, you might never see a return on your investment. is puts some inv entors in a bind: If they don’t file for a patent right away, someone else might steal their idea. But if they file too soon, they risk spending money on legal protection for an invention that may not be commercial. Wouldn ’t it be great if there was an inexpensive way to establish an official claim to your invention before filing for a patent—so you could figure out whether your invention would turn a profit before y ou pay to protect it? Well, there is—the provisional patent application. In this chapter w e’ll explain the benefits—and the disadvantages—of filing a provisional patent application. To give you an idea of what a provisional patent application looks like, we’ve also included two examples in the last section of this chapter , one based on William Lear’s car radio, and the other based on Louis Pasteur’s process for improving beer and ale (later to be known as “pasteurization”). CHAPTER 1 | THE PROVISIONAL PATENT APPLICATION | 3 After reading this book, you may de- cide that the provisional patent applica- tion is not for y ou. You may determine that your invention lacks commercial potential or is not patentable. Regardless of whether you ultimately file a provi- sional patent application, this book will help you see your invention in a wider context—in relation to patent law, licens- ing opportunities, and other inventions within your field—rather than just as an isolated creation on your workbench. How a Provisional Patent Application Works In 1995, President Clinton signed a law that allows inventors to file a provisional patent application. is process offers an effective, fast, and cheap way to safeguard y our place in line at the United States Patent and Trademark Office (USPTO) for up to one year until you file a regular patent application. A provisional patent application con- sists of text and drawings that describe how to make and use your invention. It ’s a short document—often five to ten pages—written in plain English, with none of the arcane language used in regu- lar patent applications. In fact, if you’ve written a technical article that accurately describes how to make and use your in- vention, you can submit that as part of y our application. You do not need to hire a draftsperson to prepare formal draw- ings; you can furnish informal drawings as long as they—in conjunction with your written statement—show how to make and use your in- v ention. You can either send your description, drawings, a return post- card, and a cover sheet and fee transmittal form to the USPTO by USPS Express Mail (along with the $100 fee), or you can transmit the materials elec- tr onically (as we’ll explain in Chapter 6). Once this is done, you have established an effective filing date for your invention and you can use the term “patent pend- ing” on your invention—at least for 12 months from the filing date. A provisional patent application will not, b y itself, get you a patent. In order to patent your invention and obtain some of the benefits listed above, you must file a regular patent application—a more complex document—and the patent must be appr oved by the United States Patent and Trademark Office. e provisional patent application is a simple, inexpensive strategy for preserving your rights while you decide whether to file for a regular patent. But if you want that patent, you will have to file a regular application within a year after you file your provisional application. e first home computer—the 1975 Altair—didn’t have a monitor and had toggle switches instead of a keyboard and mouse. [...]... | patent pending in 24 hours Some Patent Basics In case you’re not familiar with patent law, here are a few basics that will help you understand the material in this chapter (We discuss patent law in more detail in Chapter 2.) Utility patents are granted for inventions The U.S Patent and Trademark Office issues three types of patents—utility patents, plant patents, and design patents Utility patents... provisional patent application If, after preparing your provisional patent application, you are in doubt as to whether it meets the legal requirements, seek the advice of a patent professional Information about locating an attorney can be found in Appendix E  | patent pending in 24 hours Advantages of Filing a Provisional Patent Application Assess the Commercial Potential of Your Invention Before Filing... filing avoid disreputable invention promotion a regular patent application In that case, companies you will lose your $100 filing fee—but you will save the hundreds, maybe  | patent pending in 24 hours regular patent application is approved The label simply lets the world know that you have staked a patent claim and There’s a certain cachet to labeling your are waiting for the patent to issue As invention... after Keep in mind that marking your (see “Turning on the Lightbulb: invention patent pending doesn’t give Documenting Conception,” below) you any patent rights You cannot stop You have reduced your invention to anyone from copying, selling, or using practice once you can demonstrate that it your invention during this period Patent works The USPTO accepts any of three rights do not kick in until after... practice Leaving used in electrical date against which competing patent out an element of insulation applications will be judged your invention or • If the foreign inventor files the provifailing to explain all of the operating sional patent application and the home elements could be fatal inaccuracies country patent application at the same Other inaccuracies include using faulty time, the foreign inventor—like... and Ale was patented in be to draft a provisional patent application, we have reduced these two patents to France in 1871 and in the U.S in January 1873 provisional applications The full text of each patent is included in the appendix so that you can compare these with the real patents We’ve included the original patent drawings with each provisional patent application but, as we explain in Chapter... rigidly mounted in casing 1 by suitable hardware (not shown) chapter 1 | the provisional patent application | 23 Initial Problems Time Spent on Chapter 1 45 minutes Time Remaining 23 hours 15 minutes If you’re diligent and follow the instructions in this book, you will be able to file a provisional patent application within 24 hours Of course, as singer James Brown might add, “Sayin’ it and doin’ it are... filing, someone else filed for a similar invention Since the U.S accounts for one-quarter to one-third of all sales for most patented inventions, many inventors are not interested in pursuing foreign patent rights However, if you think that a foreign manufacturer may want licensing rights, it’s generally a good idea to preserve your foreign patent rights We discuss foreign patents in more detail in. .. patent application Minnesota Mining and Manufacturing Company v Appleton Papers Inc., 35 F Supp 2d 1138 (D Minn 1999) In 1989, the only way 3M could have preserved its rights was to file a patent application within a year of July 1989 Nowadays, companies have an easier and cheaper way to preserve their rights: filing a provisional patent application within a year of the first use 12 | patent pending. .. provisional patent application Patent It Yourself provides in- depth instructions for preparing provisional and regular patent applications as well as extensive information on topics such as commercializing your invention, drafting patent claims, and corresponding with the USPTO chapter 1 | the provisional patent application |  Federal Circuit Requires Clarity in Provisional Patent Applications In 2002, . disreputable invention promotion companies. 8 | PATENT PENDING IN 24 HOURS Use a Patent Pending Notice to Warn Potential ieves ere’s a certain cachet to labeling your invention patent pending . PUTNEY Proofreading R OBERT WELLS Index BA YSIDE INDEXING SERVICE Cover photography TO NYA PERME www.tonyaperme.com Printing DEL TA PRINTING SOLUTIONS Stim, Richard. Patent pending in 24 hours /. applica- t ion. (Using the terms patent pending or patent applied for” without filing an application is a criminal offense.) Keep in mind that marking your invention patent pending doesn’t give